According to Herman Miller’s press release, Matt Blatt gave undertakings to Herman Miller in 2006 that it would clearly identify as ‘replicas’ all copies of Eames furniture that Matt Blatt marketed for sale. The litigation came about when Herman Miller noticed some instances on Matt Blatt’s website where the name ‘Eames’ appeared without the word ‘replica’.

According to one source, the key problem was a video that described the Matt Blatt products as Eames products or as designed by Charles and Ray Eames. Herman Miller asserted that this was misleading because there was no indication that the products shown in the video were copies and not authentic.

As part of the settlement, Matt Blatt made changes to its website (including putting the word ‘replica’ in bold against every product listing) and gave a public undertaking (without admission) not to “use the word ‘Eames’ in relation to its furniture, unless such description incorporates, or is immediately proximate to, the qualification ‘replica’ or words or expressions synonymous with that word”.

So the win for authentic design was, in fact, a win about the use of the ‘Eames’ name – a name synonymous with modernist design, including iconic furniture designs – but not the designs themselves.

This is not to undermine the significance of the victory, but to emphasise the importance of the intellectual property rights residing in the ‘Eames’ name and in the reputation of the Eames brand.

The design of the furniture items did not feature in the battle. This is because the designs, some dating back to the 1940s and ’50s, are not registered. Having been industrially applied, the design drawings also no longer enjoy copyright protection in Australia. This situation applies for new designs being put on the market today.

Earlier in the year and across the globe, Knoll Inc settled a dispute in the US with Alphaville Design Inc over replica Mies van der Rohe furniture. At the core of that dispute was the use by Alphaville of Knoll’s registered ‘Barcelona’ and ‘Brno’ trademarks.

This illustrates that even when other forms of intellectual property protection are absent or have ceased, brand protection through trademark rights (registered or unregistered, including through consumer protection laws) can be enduring and very effective in controlling the marketplace.

Takehome lesson: don’t forget about the role of brand protection in protecting valuable product designs. Your intellectual property protection strategy should include registered trademark protection but also look at use of your brand name in the marketplace – including by third parties in digital media or other online business activities.

Finally, a word of caution. Increasing globalisation and the growth of digital media are making registered trademark protection increasingly important in sometimes unexpected ways. A trademark registration certificate can open and close doors. For example, consider the impact if you were suddenly blocked from being able to use your own brand name because a third party had secured trademark registration for it and secured the corresponding domain name, a Facebook page, a Google+ account and a Twitter ID. If that third party has the registered trademark rights and you do not, the battle to remove any of those digital user names from them automatically becomes much more difficult.

The risk also extends to bricks and mortar. I am aware of an Australian brand looking to extend its retail presence in China, only to find that its brand had been registered as a trademark in China by a third party. The trademark registration certificate was required to secure a retail lease. In China, as in many other countries, the first to file gets on the register.

The Herman Miller win may be a win for authentic design, but only through continuing vigilance in the marketplace and enforcement of its brand protection. What’s in a name is what you put into it.

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